File, if need be, a continuation only to the original invention, or take an appeal on the original invention, and

File a new application, rather than a CIP, for only the new invention:

without a benefit claim (35 U.S.C. §120, 37 CFR § 1.78) to the initial application, and

therefore without shortening the patent term of the initial invention if it were to be included in the CIP application, as

any benefit claim in a CIP cannot protect the new invention.

Post Allowance Tips

Issue Fee Payments

Avoid filing an Information Disclosure Statement (IDS) after payment of the issue fee.

File an IDS filed after payment of the issue fee with a Petition for Withdrawal from Issue (37 CFR 1.313(c)) and an RCE (37 CFR § 1.114). Otherwise, the IDS will be placed in the file and the cited documents will not be considered by the examiner.

Avoid delays in paying the issue fee.

The issue fee payment may be submitted via facsimile to the Office of Patent Publications ((571) 273-2885) or EFS-Web to ensure the payment is received within the non-extendable time period set forth in the Notice of Allowance and Fee(s) Due (PTOL-85).

Withdrawal from Issue

Petitions to Withdraw from Issue may be hand carried or sent via facsimile to the Office of Petitions.

Hand carries should be brought to the security guard station of the Madison West building, 600 Dulany Street, Alexandria VA 22314.

The facsimile number for the Office of Petitions is (571) 273-0025.

Note: All other types of petitions must be directed to the Central FAX ((571) 273-8300).

Thank You.

APPENDIX BEST PRACTICES

Best Practices

Use of S-signatures (37 CFR § 1.4(c)(2))

A practitioner creates a document and S-signature signs it on his/her PC. The practitioner can then:

Facsimile transmit the document directly from the PC to the Office; or

Print the document and then facsimile transmit, mail, or hand-carry the document to the Office.

An affidavit under 37 CFR § 1.132 is S-signed by the party making the affidavit, the S-signed affidavit is then:

Electronically sent to the practitioner, e.g., via an e-mail. The practitioner can then facsimile transmit, mail or hand-carry the S-signature signed document to the Office.

Power of Attorney Tips:

Do direct a Power of Attorney to the Attorneys Associated with the Customer Number to the Customer Number

Do provide a separate Power of Attorney and a separate Oath/Declaration

Priority Document Exchange Tips

Do provide a valid power of attorney with a submission for permission to access

Only the designated attorney or agent may grant permission to access.

Fee Payment Tips

Avoid placing a stop payment on a check for USPTO services or to circumvent the rules of practice. This action is not appropriate.

Request a refund (37 CFR § 1.26) where fees were paid by mistake or in excess of the amount required.

Avoid drafting a check to the USPTO for services on an account with insufficient funds.

Ensure that the account from which the check is drawn contains sufficient funds prior to submitting the check to the USPTO.

Fee Payment Tips

Do use a Deposit Account Number on a transmittal form authorizing payment